Paloma Pimenta et al.

Patent Trials and Appeals Board

Aug 6, 2020

2019004779 (P.T.A.B. Aug. 6, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/997,344 06/24/2013 Paloma Pimenta 9222-00-US-01-OC 7985
23909 7590 08/06/2020
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
EXAMINER
CHANG, KYUNG SOOK
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
08/06/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
Patent_Mail@colpal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte PALOMA PIMENTA and JASON NESTA1
________________

Appeal 2019-004779
Application 13/997,344
Technology Center 1600
________________

Before ERIC B. GRIMES, JOHN G. NEW, and RYAN H. FLAX,
Administrative Patent Judges.

NEW, Administrative Patent Judge.

DECISION ON APPEAL

1 We use the term “Appellant” to refer to the “applicant” as defined in
37 C.F.R. § 1.142. Appellant states that the real party-in-interest is
Colgate-Palmolive Company. App. Br. 2.
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Application 13/997,344

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SUMMARY
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1, 2, 11–15, 18, 19, and 22–26 as
unpatentable under 35 U.S.C. § 103(a) as being obvious over the
combination of Cornelis et al. (WO 95/20971, August 10, 1995) (“Cornelis”)
and Stier et al. (US 2003/0091514 A1, May 15, 2003) (“Stier”).
Claims 1, 2, 11–15, 18, 19, and 22–26 also stand rejected under
35 U.S.C. § 103(a) as being obvious over the combination of Cornelis, Stier,
and Shastry et al. (US 2005/0210615 A1, September 29, 2005) (“Shastry”).
Claims 1, 2, 11–15, 18, 19, and 22–26 further stand rejected as
unpatentable under the nonstatutory doctrine of obviousness-type
double patenting over claims 1–4, 6, 7, 10, 11, 13–15, and 17–25 of co-
pending application US Ser. No. 13/997,381 (the “’381 application”)2, and
over claims 1, 3–6 and 8–24 of co-pending application US Ser. No.
14/362,908 (the “’908 application”).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

2 Appellant argues that these obviousness-type double patenting rejections
are provisional. See App. Br. 12. However, we note that, subsequent to
the filing of Appellant’s Brief, the ’381 application issued on October 22,
2019 as US 10,149,139 B2 and the ’908 application issued on July 28,
2020 as US 10,722,446. Consequently, the rejections are no longer
provisional.
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NATURE OF THE CLAIMED INVENTION
Appellant’s invention is directed to oral fluid compositions
comprising one or more structuring agents, and methods of making and
using the same. Abst.
REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal and recites:
1. A fluid composition comprising:

structuring agents of:

a colloidal gum;

a cellulosic polymer;

an acrylate polymer; and

optionally, a clay or fine particulate; and

an orally acceptable aqueous carrier;

wherein the total concentration of the structuring agents is
from about 0.03% to about 2%, by weight, of the composition;

wherein the composition is a mouthwash or mouthrinse,
and

wherein the composition has a Flow Rate Index from
about 0.1 to about 0.85, a Consistency Index of from about 10 to
about 2000 and a Gʹ/Gʹʹ ratio of 1 to 15;

wherein the colloidal gum is selected from the group
consisting of agar, agarose, albumin, algae colloid, alginates,
alginic acid and salts thereof, amber, ammoniac, amylopectins,
arabinans, arabinogalactan, arabinoxylans, asafetida, bdellium,
carageenans, casein, chicle, collagen, copal, curdlan, dermatin
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sulfate, dextrans, cross-linked dextrans, dextrin, emulsan,
gelatin, fenugreek, frankincense, furcellarans,
galactoglucomannans, galactomannans, gamboge, gellan, gellan
gum, glucomannans, glycogens, guar, guar gum,
hydroxypropylated guar gums, carboxymethyl guar gum,
carboxymethyl(hydroxypropyl) guar gum, hydroxyethyl guar
gum, gum arabic, gum elastic, gum ghatti, gum karaya, gum
tragancanth (tragacanthin), heparin, hyaluronic acid, India
rubber, inulin, karaya gum, keratin sulfate, konjac flour, konjac
mannan, labdanum, laminarans, laurdimoniurn, laxseed
saccharide (acidic), levan, locust bean gum, myrrh, okra gum,
pectic acids, pectin, polydextrose, polyquaternium-4,
polyquaternium-10, polyquaternium-28, protopectins, psyllium
seed gum, pullulan, quince seed gum, sodium hyaluronate,
raffinose, rhamsan, scleroglucan, sodium alginate, stachylose,
starch from rice, corn, potato or wheat, tapioca starch,
succinoglycan, tamarind seed gum, trant gum, water-soluble
soybean polysaccharide, whelan, xanthan, xanthan gum, xylans,
xyloglucans, and mixtures thereof;

wherein the cellulosic polymer is selected from the group
consisting of: cellulose; methyl cellulose; ethyl cellulose; propyl
cellulose; butyl cellulose; carboxymethyl cellulose;
carboxymethyl cellulose; carboxymethyl methyl cellulose;
carboxyethyl ethyl cellulose; carboxyethyl methyl cellulose;
carboxymethyl ethyl cellulose; hydroxyalkyl cellulose;
hydroxyethyl cellulose; hydroxypropyl cellulose; hydroxybutyl
cellulose; hydroxyethyl methyl cellulose; hydroxypropyl methyl
cellulose; hydroxybutyl methyl cellulose; hydroxyethyl ethyl
cellulose; hydroxypropyl ethyl cellulose; hydroxybutyl ethyl
cellulose; hydroxyethylpropyl cellulose; hydroxypropyl propyl
cellulose; hydroxybutyl propyl cellulose; hydroxyethyl butyl
cellulose; hydroxypropyl butyl cellulose; hydroxybutyl butyl
cellulose; hydroxypropyl oxyethyl cellulose; steardimonium
hydroxyethyl cellulose; cocodimonium hvdroxypropyl oxyethyl
cellulose; sodium carboxymethyl cellulose; nitrocellulose;
sodium cellulose sulfate; chondroitin; chitin; chitosan; chitosan
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pyrrolidone carboxylate; chitosan glycolate chitosan lactate or
mixtures thereof;

wherein the acrylate polymer is selected from the group
consisting of homopolymers of acrylic acid, crosslinked with an
allyl ether pentaerythritol, allyl ether of sucrose or allyl ether of
propylene, polyvinyl methylether, and carboxyvinyl polymer;
polyoxyethylene polymers; polyoxyethylene/polyoxypropylene
copolymers; acrylic polymers, sodium polyacrylate, polyethyl
acrylate and polyaclylamide; synthetic water-soluble polymers,
polyethyleneimine, cationic polymers; semi-synthetic water-
soluble polymers, silicone-modified pulllan; water-soluble
inorganic polymers, bentonite, aluminum magnesium silicate,
montmorillonite, beidellite, notronite, saponite, hectorite, silicic
anhydride and mixtures thereof.

App. Br. 14–15. Claim 2 depends from claim 1 and recites:

2. The composition of claim 1, wherein

the amount of a colloidal gum is from about 0.01 to about
0.5%, by weight;

the amount of a cellulosic polymer is from about 0.01 to
about 0.5%, by weight; and

the amount of an acrylate polymer is from about 0.01 to
about 0.5%, by weight.

Id. at 15.

ISSUE AND ANALYSIS
We adopt the Examiner’s reasoning, findings of fact, and conclusions
that the appealed claims are obvious over the combined cited prior art. We
address the arguments raised by Appellant below.

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A. Rejection of claims 1, 2, 11–15, 18, 19, and 22–26 over Cornelis and
Stier

Issue
Appellant argues the Examiner erred because the combined cited prior
art neither teaches nor suggests a composition comprising a specific
combination of colloidal gum, a cellulosic polymer, and an acrylate polymer
in amounts of 0.03–2% or having a Flow Rate Index from about 0.1 to about
0.85, a Consistency Index of from about 10 to about 2000, and a Gʹ/Gʹʹ ratio
of 1 to 15, as recited in claim 1. App. Br. 6.

Analysis
The Examiner finds that Cornelis teaches a therapeutic composition
comprising an aqueous solution of at least one polymer and at least one
electrolyte in which the at least one polymer can be chosen for scleroglucan,
guar gum, xanthan gum, sodium carboxymethyl cellulose, hydroxyethyl
cellulose, polyacrylic acid and polyvinyl alcohol. Final Act. 4 (see Cornelis
2). The Examiner finds that Cornelis teaches that its therapeutic
composition can serve as saliva substitution agent or artificial tear water, in a
mouth rinse, or in a toothpaste. Id. (citing Cornelis Abstr.). The Examiner
finds that Cornelis teaches that the polymer is preferably chosen from the
group which consists of scleroglucan (in a concentration of about 0.001 % to
2% (w/v)), guar gum (about 0.001% to 5% (w/v)), xanthan gum (about
0.001% to 2% (w/v)), sodium carboxymethyl cellulose (e.g., the type
Blanose® 7HF (0.01 to 5% (w/v)), hydroxyethyl cellulose (e.g., Natrosol 250
HX Pharm (0.01 to 5% (w/v)) and polyacrylic acid (e.g., Carbopol 934P®
and Carbopol 974P® (0.01 to 5% (w/v)). Id. at 5 (citing Cornelis 2). The
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Examiner finds that these concentrations overlap the concentrations of the
polymers recited in Appellant’s dependent claim 2. Id. at 6.
The Examiner finds that Stier teaches an oral care composition such
as mouth washes and mouth rinses, comprising diglycerol humectant, water,
active compound, alcohol, sweetener, thickening agent, surfactant,
suspending agents, astringent, toning drug extracts, flavor correctants,
abrasives, whitening agent, antimicrobial agents, pH buffers, etc. Final Act.
6 (citing Stier Abstr.). The Examiner finds that Stier teaches xanthan gum,
CMC, and Carbopol as thickening agents, diglycerol, glycerin, polyols such
as sorbitol, or PEG as a humectant, active compounds including sodium
fluoride, stannous fluoride, and sodium monofluorophosphate. Id. (citing
Stier ¶¶ 24, 29, claims 1, 3, 6). The Examiner finds that Stier further teaches
that its mouth rinse composition comprises about 5 to 80% of water (e.g.,
64.10%). Id. (citing Stier ¶¶ 70, 73, 76, claim 1).
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to modify the structuring agents of Cornelis with the
teachings of Stier to produce the claimed invention. Final Act. 7. The
Examiner reasons that a skilled artisan would have been motivated to
combine the references because Cornelis teaches that at least one polymer,
xanthan gum, guar gum, alginic acid, carboxymethyl cellulose, and
polyacrylic acid are effective in an oral care composition, and that it would
therefore have been obvious to combine these known components as,
respectively, a colloidal polymer, cellulosic polymer and acrylate polymer to
use in an oral composition. Id. The Examiner further concludes that the
combination of the references would have nothing more than predictably
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additive effects from the respective functions of the constituents. Id. (citing
MPEP § 2143 (A)).
Appellant points to our Decision on a prior appeal from this
application (the “Prior Decision” filed July 12, 2018), in which we found
that Cornelis is silent with respect to the rheological properties of
compositions comprising a combination of a colloidal gum, a cellulosic
polymer, and an acrylate polymer, and that prediction of the properties of
such a combination must therefore be speculative. App. Br. 6 (citing Prior
Dec. 14). Appellant also notes that we nevertheless concluded that, because
the teachings of Cornelis directly suggest such a composition, the burden
shifts to Appellant to show, via evidence of record, that the claimed
rheological properties would not be inherent to such a composition. Id.
Appellant argues that Cornelis is directed to therapeutic compositions
for replacing and/or supplementing body fluids such as saliva and tears.
App. Br. 6. According to Appellant, Cornelis teaches that the object of the
invention is to provide a saliva substitute which approximates the properties
of human saliva better than the known products, eliminates the dry sensation
in mouth and eyes and needs to be applied less often. Id. (citing Cornelis 2).
More specifically, argues Appellant, Cornelis teaches that the criterion
for a rheologically adequate saliva imitation can preferably have a viscosity
ηʹ between 1.5 and 3 mPa·s and an elasticity ηʹʹ between 0.1 and 1 mPa·s at
1.5 s-1. App. Br. 6 (citing Cornelis 7). Appellants assert that Cornelis
teaches that this range reflects the visco-elasticity of complete human saliva
and saliva from the different glands. Id. at 6–7.
Appellant relies upon E.-A. Brujan, CAVITATION IN NON-NEWTONIAN
FLUIDS WITH BIOMEDICAL AND BIOENGINEERING APPLICATIONS (2011)
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(“Brujan”) as teaching that, the claim term Gʹ/Gʹʹ3 is equal to ηʹʹ/ηʹ. App. Br.
7 (citing Brujan 9). Appellant argues that Cornelis teaches that its
composition has a Gʹ/Gʹʹ ratio similar to that of human saliva, about 0.03
(0.1/3) to about 0.67 (1/1.5). Id. Appellant asserts that this range does not
overlap the claimed range of Gʹ/Gʹʹ of 1 to 15. Appellant points to Table 2
of Cornelis, arguing that it shows that complete, clarified human saliva has
ηʹ of 2.1 and ηʹʹ of 0.77, therefore having a Gʹ/Gʹʹ ratio of 0.37. Id.
Appellant contends that the rheological properties of both Cornelis’
composition and human saliva are significantly different from the
rheological properties recited in claim 1. Id. Therefore, argues Appellant,
the claimed rheological properties are not inherent to the compositions of
Cornelis. Id.
Appellant disputes the Examiner’s reasoning that argues that Cornelis
is not limited to that specific criterion because it is only a preferred
embodiment, and because consideration of a reference is not limited to the
preferred embodiments, or to the working examples, but extends rather to
the teachings of the entire disclosure, when viewed in light of the submitted
knowledge in the art, to a person of ordinary skill. App. Br. 7 (citing Adv.
Act. 2, December 27, 2018 (citing Merck & Co. v. Biocraft Labs., Inc., 874
F.2d 804, 807 (Fed. Cir. 1989)). Appellant responds that the object of
Cornelis’ therapeutic composition is to provide a saliva substitute which
approximates the properties of human saliva, whereas the object of the
claimed composition is to maintain solids in suspension and provide good

3 Gʹ is the storage modulus and Gʹʹ is the loss modulus. See App. Br. 7
(citing Brujan 9).
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mouth feel during and after use. Id. Appellant contends that there is no
teaching or suggestion in Cornelis that would motivate one of skill in the art
to modify its composition to a composition having rheological properties
significantly different from those of saliva. Id.
Appellant also disputes the Examiner’s finding that Table 2 of
Cornelis teaches that “other embodiments … fall within the instantly
claimed Gʹ/Gʹʹ ratio. Here, scleroglucan at 0.1% concentration [ ] has a
Gʹ/Gʹʹ ratio of 38.6/20.6 = 1.87 and within the instantly claimed range of 1–
10,” and that, depending on the concentration of gum, the Gʹ/Gʹʹ ratio can
vary. App. Br. 7 (quoting Adv. Act. 2). Appellant argues that Table 2 of
Cornelis does not teach embodiments, rather, Table 2 compares rheological
properties of several tested polysaccharides at 0.1% and a polymer-specific
saliva simulating concentration with those of clarified complete human
saliva. Id. at 8. According to Appellant, Table 2 of Cornelis shows that
clarified complete human saliva has ηʹ of 2.1 and ηʹʹ of 0.77, whereas
scleroglucan at 0.1% has ηʹ of 20.6 and ηʹʹ of 38.6. Id. Appellant contends
that the ηʹ and ηʹʹ values of scleroglucan at a concentration of 0.1% are 9.8
times and 50 times higher, respectively, than those of complete human
saliva. Id. Appellant asserts that it is therefore evident that rheological
properties of 0.1% scleroglucan are not similar to those of human saliva.
Cornelis explicitly teaches the criterion for a rheologically adequate saliva,
which requires a ηʹ between 1.5 and 3.0 mPa·s and a ηʹʹ between 0.1 and 1.0
mPa·s at 1.5 s·1. Id. (citing Cornelis 7). Therefore, argues Appellant, a
person of ordinary skill in the art would have understood that 0.1%
Scleroglucan is not suitable as a saliva substitute. Id.
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Appellant summarizes that the composition recited in claim 1 requires
a particular combination of ingredients with specific rheological parameters,
and that Claim 2 further requires that the amount of a colloidal gum is from
about 0.01 to about 0.5%, by weight; the amount of a cellulosic polymer is
from about 0.01 to about 0.5%, by weight; and the amount of an acrylate
polymer is from about 0.01 to about 0.5%, by weight. App. Br. 8.
Appellant asserts that the Examiner has failed to provide any articulated
reason why it would be obvious to modify the composition of Cornelis
(allegedly a saliva substitute) to arrive at a composition having rheological
properties which are significantly different from those of saliva as recited in
claims 1 and 2. Id. at 9.
We are not persuaded by Appellant’s arguments. As an initial matter,
we do not agree with Appellant that the invention of Cornelis is directed
solely to a saliva substitute. Cornelis expressly teaches that:
The composition can further also contain calcium and/or at least
one phosphate compound, as well as flavourings and/or aromatic
substances and/or colourings and preservative.

The invention further relates to saliva substitutes or additives,
artificial tear water or tear additives, mouth rinses and
toothpastes.

The advantages of the present invention will become apparent
from the example hereinbelow, which is however only intended
as illustration and further implies no limitation whatever to the
scope of the invention.

Cornelis 2 (emphases added); see also Cornelis Abstr. We consequently
find that Appellant interprets the scope of Cornelis too narrowly: in addition
to “saliva substitutes,” the teachings of Cornelis are expressly directed to
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artificial tears or tear additives, mouth rinses and toothpastes, similar to
Appellant’s independent claim 1 recitation of “wherein the composition is a
mouthwash or mouthrinse.” Consequently, we are not persuaded that the
scope of the compositions taught by Cornelis is constrained by the
rheological properties of saliva alone.
More importantly, Appellant fails to adequately address our
conclusion in the Prior Decision, in which we stated:
Nevertheless, and as we have explained, the teachings of
Cornelis would teach a person of ordinary skill in the art that the
claimed composition of polymers could be successfully
combined in a therapeutic oral composition. Furthermore, a
person of ordinary skill in the art, seeking to achieve the
desirable rheological properties for an oral therapeutic
composition, would be able to optimize the rheological
properties by combining the constituents in such a manner as to
achieve them. See, e.g., Cornelis 1.

Finally, because the teachings of Cornelis directly suggest such
a composition, the burden shifts to Appellants to show, via
evidence of record, that the claimed rheological properties
would not be inherent to such a composition. This they have not
done, and we consequently affirm the Examiner’s rejection of
claim 1.

Prior Dec. 14. The same reasoning applies in the appeal presently before us.
Claim 2, which properly narrows the scope of claim 1, recites: (1) the
amount of a colloidal gum is from about 0.01 to about 0.5%, by weight; (2)
the amount of a cellulosic polymer is from about 0.01 to about 0.5%, by
weight; and (3) the amount of an acrylate polymer is from about 0.01 to
about 0.5%, by weight. The Examiner finds, and Appellant does not dispute,
that Cornelis teaches concentrations of each of (1)–(3) that fall within the
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recited range. See Cornelis 2. As our reviewing court has held: “In cases
involving overlapping ranges, we and our predecessor court have
consistently held that even a slight overlap in range establishes a prima facie
case of obviousness.” In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Furthermore,
Where, as here, the claimed and prior art products are identical
or substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed
product…. Whether the rejection is based on “inherency” under
35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C.
§ 103, jointly or alternatively, the burden of proof is the same,
and its fairness is evidenced by the PTO’s inability to
manufacture products or to obtain and compare prior art
products.

In re Best, 562 F.2d 1252, 1255 (C.C.P.A. 1977). In the appeal before us
Appellant’s claimed ranges of colloidal gum, cellulose-based polymer, and
acrylate polymer each overlap the ranges taught by Cornelis. See claims 1,
2. Appellant has not met the burden of demonstrating that the compositions
thus within the scope of the teachings of Cornelis could not have the claimed
rheological properties. Because Appellant has failed to meet this burden, we
affirm the Examiner’s rejection of the claims.

B. Rejection of claims 1, 2, 11–15, 18, 19, and 22–26 over Cornelis,
Stier, and Shastry

Appellant argues that there is no teaching or suggestion in Shastry of a
composition comprising a specific combination of colloidal gum, a
cellulosic polymer, and an acrylate polymer in an amount of 0.03–2%. App.
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Br. 9–10. Furthermore, argues Appellant, Shastry does not disclose or
suggest a composition having a Flow Rate Index from about 0.1 to about
0.85, a Consistency Index of from about 10 to about 2000, and a Gʹ/Gʹʹ ratio
of 1 to 15, as recited in claim 1. Id. at 10.
However, we have explained our reasoning supra as to why the
combination of Cornelis and Stier teach or suggests these limitations.
Consequently, we are not persuaded by Appellant’s arguments, and we
affirm the Examiner’s rejection upon this ground.

C. Obviousness-type double patenting
Appellant requests that, because the rejection of claims 1, 2, 11–15,
18, 19, and 22–26 over claims 1–4, 6, 7, 10, 11, 13–15, and 17–25 of the
’381 application and over claims 1, 3–6, and 8–24 of the ’908 application are
provisional4, the rejections be held in abeyance until such time as otherwise
allowable subject matter is identified in the present application. App. Br. 12.
However, because we affirm the Examiner’s rejection of the claims as
unpatentable under 35 U.S.C. § 103(a), we similarly affirm the Examiner’s
rejection upon this ground.

DECISION
The Examiner’s rejection of claims 1, 2, 11–15, 18, 19, and 22–26 as
unpatentable under 35 U.S.C. § 103(a) is affirmed.

4 But see fn.2 supra.
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The Examiner’s rejection of claims 1, 2, 11–15, 18, 19, and 22–26
under the nonstatutory doctrine of obviousness-type double patenting is also
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 11–
15, 18, 19,
22–26
103(a) Cornelis Stier

1, 2, 11–15,
18, 19, 22–
26

1, 2, 11–
15, 18, 19,
22–26
103(a) Cornelis, Stier,
Shastry
1, 2, 11–15,
18, 19, 22–
26

1, 2, 11–
15, 18, 19,
22–26
Obviousness-
type double
patenting
US Ser. Nos.
13/997,381,
14/362,908
1, 2, 11–15,
18, 19, 22–
26

Overall
Outcome
1, 2, 11–15,
18, 19, 22–
26